Novello and Company Ltd v Keith Prowse Music Publishing Company Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Patten |
| Judgment Date | 07 April 2004 |
| Neutral Citation | [2004] EWHC 766 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC03 C03797 |
| Date | 07 April 2004 |
[2004] EWHC 766 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Patten
Case No: HC03 C03797
Mary Vitoria QC (instructed by Davenport Lyons) for the Claimant
Ian Mill QC and Shaheed Fatima (instructed by Clintons) for the Defendant
Hearing date: 31 st March 2004
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Justice Patten
Introduction
The principal question which I have to decide in this action is whether a living author (in this case a composer) was able during the currency of the Copyright Act 1956 ("the 1956 Act") to assign the reversionary interest in the copyright in his works, expectant on the termination of the period of 25 years from his death. I shall refer to this interest, for convenience, as "the reversionary interest". Until the commencement of the 1956 Act on 1 st June 1957 the answer was clear. Section 5(2) of the Copyright Act 1911 ("the 1911 Act"), whilst conferring on the owner of the copyright a general power of assignment for the whole or part of the term of that copyright, made express provision that no inter vivos assignment would be operative to vest the reversionary interest in the assignee and that those rights would vest (notwithstanding any agreement to the contrary) in the author's personal representatives. The proviso to s.5(2) was preserved by Sch 7, para 28(3) of the 1956 Act in relation to certain types of assignment made before 1 st June 1957: see para 28(1). The issue between the parties is whether the combined effect of these provisions was also to apply the proviso to s.5(2) to assignments made after that date, but in respect of existing works to which the provisions of the 1911 Act, including s.5(2), had previously applied.
Although it is now almost 50 years since the 1956 Act came into force and more than 10 years since it was repealed by the Copyright, Designs and Patents Act 1988 ("the 1988 Act"), this point of statutory construction remains unresolved. The only judicial statement on the point is a passage in the judgment of Goff J in Redwood Music Ltd v. Francis, Day & Hunter [1978] RPC 429 at page 434, where he said:
"The Act of 1911 was repealed by the Copyright Act 1956; and the Act of 1956 contains no provision comparable to the proviso to section 5(2) of the Act of 1911. However by virtue of section 50 and paragraph 28 of the Seventh Schedule of the Act of 1956, the proviso to section 5(2) of the Act of 1911 remains applicable to pre-1957 works, unless some further assignment of the copyright has been made since the commencement of the Act of 1956. It is perhaps of some significance that Parliament did not consider the reversionary interest worth preserving in the Act of 1956."
That dictum supports the Defendant's case that after 1 st June 1957 an author became free to dispose of the reversionary interest, but the point did not arise for decision in that case and remains, in terms of precedent, an open question.
The leading textbooks are also ambivalent. The editors of Copinger and Skone James on Copyright (14 th edition) state that the position is unclear, but support the Claimant's argument. Paragraph 5–113(b) states that:
"Whether the reversionary interest could have been so assigned by the author between June 1, 1957 and August 1, 1989 is unclear. It is suggested that the wording of the reverter provision in the 1911 Act, which was repeated in the 1956 Act and applied to assignments executed before commencement of the 1956 Act, was mandatory in relation to the devolution of the reversionary interest and did not permit of any assignment of it by the author, even in the case of a further assignment made after the 1956 Act came into force. It seems the draftsman of the 1988 Act took the same view, and hence the ability to assign the reversion is expressly made possible only after August 1, 1989."
Laddie, Prescott and Vitoria, The Modern Law of Copyright and Design (3 rd edition) sets out both sides of the argument, but expresses no preference between them.
The Background Facts
The only issue in the action is which of the parties owns the reversionary interest. The Claimant relies for its title upon an assignment in writing dated 31 st October 2000 made by the trustees of the will of the late Richard S Addinsell, who died on 14 th November 1977. Mr Addinsell was a celebrated composer, particularly of film scores. He was responsible for the scores for a number of well-known films released during the 1940s, including Goodbye Mr Chips, Fire Over England, Tom Brown's Schooldays, Beau Brummel and Dangerous Moonlight. Part of the music composed for Dangerous Moonlight was the Warsaw Concerto, the copyright to which forms part of this claim. All of the works in dispute were written before 1 st June 1957.
Between 1941 and 1946 Mr Addinsell assigned the "whole of his copyright" in the music and songs to Keith Prowse and Company Limited ("KPCL") in exchange for a royalty. Thereafter KPCL assigned the rights to the Defendant. On 4 th December 1973 Mr Addinsell executed a further assignment in writing in favour of the Defendant of:
"the whole of the copyright throughout the world of and in all the musical compositions written and/or composed by the undersigned, the copyrights in which have heretofore been acquired by the Company by earlier assignments to the intent that this assignment shall operate under the 1956 Copyright Act."
It is this assignment which the Defendant relies upon as vesting in it the reversionary interest. It is common ground that if it was effective to do this, then the assignment to the Claimant of the same rights in 2000 was of no effect.
Miss Vitoria QC for the Claimant relies upon two arguments in support of her client's title under the 2000 assignment. First, she submits that the effect of the transitional provisions contained in the 1956 Act was to apply to the 1973 assignment the proviso to s.5(2) of the 1911 Act. If this is correct, then it must follow that the 1973 assignment was not effective to transfer to the Defendant the reversionary interest. If she is wrong about that, she contends in the alternative that on its true construction the 1973 assignment did not convey to the Defendant any greater rights than were contained in the earlier assignments executed in the 1940s: i.e. did not include the reversionary interest. I turn first to consider the question of whether the 1973 assignment was capable of transferring the reversionary interest, having regard to the provisions of the 1956 Act.
The Statutory Provisions
There is a measure of agreement between the parties as to the statutory provisions which govern the effect of the 1973 assignment. Although the musical works in question were composed in the 1940s and attracted copyright under the 1911 Act, the existence and enforceability of those rights now depend on the 1988 Act: see s.171(2). Similarly, although the 1973 assignment took effect (if at all) under the provisions of the 1956 Act, it operated to convey rights created and continued under that Act and now replaced by the 1988 Act. It is therefore to the 1988 Act that one needs to turn in the first instance, in order to establish the current status of the 1973 assignment.
Under s.12(2) of the 1988 Act copyright in musical works expires at the end of the period of 70 years from the end of the calendar year in which the author dies. But in the case of works made prior to the commencement of the 1988 Act and of acts and events occurring before that date, the transitional provisions contained in Schedule 1 to the Act apply: see s.170. The general principles embodied in the transitional provisions are set out in paras 3 and 4 of Schedule 1. One of those principles is to ensure the continuity of the law, and para 3 provides that:
"The new copyright provisions apply in relation to things existing at commencement as they apply in relation to things coming into existence after commencement, subject to any express provision to the contrary."
The 1988 Act is therefore a complete code, although it regulates the law in part by preserving in relation to copyright in existing works the statutory codes applicable at the time when the work was made. So, for example, the duration of copyright for musical works, although 70 years from the author's death under the 1988 Act, remains the period of 50 years from the author's death for existing musical works falling within the special cases set out in sub-paragraphs 12(2), (3) and (4). In such cases the provisions of the 1911 and the 1956 Acts are applied. Similarly, the question as to who was the first owner of copyright in an existing work is determined in accordance with the law in force at the time the work was made (see Sch 1, para 11(1)) and in relation to films, which only became the subject of copyright under the 1956 Act, the provisions of the 1911 Act are preserved for films made before 1 st June 1957: see Sch 1, para 7.
Paragraphs 25–29 of Sch 1 to the 1988 Act deal with assignments and licences. Paragraph 25 provides that:
" (1) Any document made or event occurring before commencement which had any operation——
(a) affecting the ownership of the copyright in an existing work, or
(b) creating, transferring or terminating an interest, right or licence in respect of the copyright in an existing work,
has the corresponding operation in relation to copyright in the work under this Act.
(2) Expressions used in such a document shall be construed in accordance with their effect immediately...
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